CATCHWORDS TRADE PRACTICES AND PASSING OFF - consumer protection - misleading and deceptive conduct - whether use of name likely to mislead or deceive by 'suggesting connection between parties' businesses ~- relevance of closeness or otherwise of respective fields of parties' businesses. Trade Practices Act 1974: ss. 52, 53, 53A. CHASE MANHATTAN OVERSEAS CORPORATION, CHASE AMP BANK LIMITED (formerly cHasE AMP LIMITED), THE CHASE MANHATTAN BANK, N.A. v. CHASE CORPORATION LIMITED and ADRIAN KENNETH BURR G30: of 1986 LOCKHART, NEAVES and BEAUMONT JJ. SYDNEY 21 NOVEMBER 1986 1. FEO STRALIA Rooter [Tov IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION No. G30 of 1986 es we ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN : CHASE MANHATTAN OVERSEAS CORPORATION First Appellant CHASE AMP BANK LIMITED (formerly CHASE AMP LIMITED) Second Appellant THE CHASE MANHATTAN BANK, N.A. Third Appellant AND: CHASE CORPORATION LIMITED First Respondent ADRIAN KENNETH BURR Second Respondent JUDGES MAKING ORDER: LOCKHART, NEAVES and BEAUMONT JJ. DATE OF ORDER: 21 NOVEMBER 1986 WHERE ORDER MADE: SYDNEY MINUTES OF ORDER THE COURT ORDERS THAT: 1. 2. NOTE: The appeal be dismissed. The appellants pay the respondents' costs of the appeal. Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. Seine aereanal sors IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G30 of 1986 ) GENERAL DIVISION ) ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN : CHASE MANHATTAN OVERSEAS CORPORATION First Appellant CHASE AMP BANK LIMITED (formerly CHASE AMP LIMITED) Second Appellant THE CHASE MANHATTAN BANK, N.A. Third Appellant AND: CHASE CORPORATION LIMITED First Respondent ADRIAN KENNETH BURR Second Respondent CORAM: LOCKHART, NEAVES and BEAUMONT JJ. DATED: 21 NOVEMBER 1986 REASONS FOR JUDGMENT LOCKHART J. I have had the advantage of reading the reasons for judgment of Beaumont J.. The facts and issues are fully set out by his Honour, so I need not repeat them. The main business of the appellants in Australia is the provision of banking and financial services. The second appellant, Chase AMP Bank Limited, was granted an Australian banking licence in September 1985. It carries on business in each of the capital cities of the States, but principally in Sydney. Its business includes offering "retail" banking services to the public ' yy 2. which include accepting money on deposit and current account, advancing money on overdraft, the provision of leasing finance, issuing letters of credit and dealing in foreign currencies. It also issues Chase AMP credit cards, provides automatic teller machine services and issues Chase Manhattan Bank N.A. travellers' cheques. The staff of the first appellant, Chase Manhattan Overseas Corporation, is being absorbed by Chase AMP Bank Limited. It is expected that the Australian operations of the last mentioned company will soon close down leaving Chase AMP Bank Limited as the only remaining member of the Chase Manhattan group with a presence in Australia. The respondent, Chase Corporation Limited, is a flourishing and relatively new company based in New Zealand. Its primary business is the development of real estate and investment in companies, both public and private. In an advertisement published in the Australian Financial Review in October 1985 Chase Corporation Limited described itself as "an entrepreneurial, high growth company, involved in all aspects of business and property investment, management and development". Chase Corporation Limited conducts no business in this country on its own account but does so through a company, Jonray Holdings Limited, a property developer listed on Australian stock exchanges. The argument before us and at the trial centred principally on the question whether there was any common field of activity between the parties. The existence of a common field of activity is not necessary before s. 52 can be infringed, but it is a relevant factor. His Honour found that "there was very little common field of activity" sae ? rey nn' Cg es - { 3. between the parties and that it could reasonably be expected that any initial confusion as to any connection between Chase Corporation Limited and the Chase Manhattan Group would be removed .before any financial commitment was made by a person dealing with Chase Corporation Limited. His Honour found that the appellants had not established that the conduct of Chase Corporation Limited in relation to its Australian activities involved "any misrepresentation to members of any relevant group in the Australian community as to its identity or connections or that the name is likely to mislead or deceive". His Honour concluded that the use by Chase Corporation Limited of the name "Chase" did not involve a representation that the business of that company is that of any of the appellants and that in the circumstances the claims based upon alleged contraventions of ss. 52, 53 and 53A of the Trade Practices Act 1974 and on passing off failed. There is, I think, a real possibility that each of Chase AMP Bank Limited and Chase Corporation Limited will expand the scope of its business in Australia. Chase AMP Bank Limited proposes to invite the public to subscribe to trust funds to be invested in equity and mortgage securities. The activities of Chase Corporation Limited have shown that it is capable of considerable diversification in a short time and I think there is a real possibility that it may extend its activities in the field of investment. The parties are quite likely to engage in related, though not the same, fields of business and there is a real possibility of overlap between their respective business activities. le 4. I am satisfied that if this occurs there is a possibility some degree of confusion may be created in the minds of the public or relevant members of the public; but that circumstance does not resolve this matter in favour of the appellants. In my opinion, any activities of Chase Corporation Limited would fall short of conduct that could be said to constitute a misrepresentation by it or otherwise to mislead or deceive within the meaning of s. 52 or to establish passing off. The distinction between conduct which is likely to mislead or deceive and conduct which may merely cause some degree of confusion or some uncertainty in the minds of relevant members of the public is referred to in Parkdale Custombuilt Furniture Pty. Limited v. Puxu Pty. Limited (1982) 149 CLR 191 especially per Mason J. at 210. Conduct does not contravene s. 52 merely because members of the public would be caused to wonder whether it might not be the case that two products come from the same source or two services are provided by the same source or two business names suggest that they come from the same stable. The purpose of Part V of the Trade Practices Act is to protect consumers by eliminating unfair trade practices. The object of s. 52 is to prevent misleading or deceptive conduct which will affect the identification of goods or services. Conduct which merely causes some uncertainty in the minds of the public does not infringe s. 52. In my opinion, for the appellants to succeed in this case would come dangerously close to conferring upon them a statutory monopoly in the word "Chase". It is not a descriptive word in the sense in which that expression is generally used in this branch of the law, namely, as descriptive of the nature of the business or the place Or person by whom it is conducted. Nor is it a concocted or fancy rat es sae oe et ee a EET Taare i ' ! ! r 5. name. But it is a common English word and is susceptible of various meanings as a reference to the dictionaries demonstrates. The evidence in this case is that the founders of Chase Corporation Limited adopted the name "Chase" because it "was commonly used in England to describe unenclosed woodlands or hunting grounds" and "reflected the green of the countryside" and the proposed business of the company of purchasing and developing farm land. Indeed, the first farming venture which the company promoted was called "Cotswold Greens". That evidence was accepted by his Honour and the finding was not challenged before us. Nor was his Honour's finding challenged that the name "Chase" was chosen by the respondents in ignorance of the existence of the Chase Manhattan group. It is true that the appellants have a long established international reputation including a reputation in Australia in the field of banking and financial services; so that the word "Chase" when associated with banking or financial services is associated by some relevant members of the public with the appellants' corporate group. But a point of some significance is that the business of the Chase Manhattan group in Australia is henceforth to be conducted by Chase AMP Bank Limited. That company is the vehicle for a business enterprise owned by both the Chase Manhattan group and the AMP Society. Indeed its advertising emphasises not merely the word "Chase" but the letters "AMP". Although the word Chase, when associated with banking or financial services, means to many people the Chase Manhattan group, it is important to note that in Australia AMP is a household word for the assurance company by that name. The conjunction of the 'words "Chase" and "AMP" to form "Chase AMP" is intended to emphasise, not only the Chase connection, but the AMP | ? ange me mace se or oo, we Vote eee ce coe See oe mate res wees " Hy at es en yee . of t gees Py aay ' 6. connection as well. The appellants, through Chase AMP Bank Limited, will continue to carry on business in Australia as "Chase AMP"; and the minds of relevant members of the public will probably increasingly link the two elements "Chase" and "AMP" with the one image "Chase AMP". I am not persuaded that the conduct of Chase Corporation Limited is or is likely to amount to a misrepresentation of misleading or deceptive conduct or to constitute passing off. At its highest the appellants' case establishes simply that it is possible that some confusion or uncertainty may be created in the minds of relevant members of the public if Chase Corporation Limited carries on its activities in this country and expands them into related fields to those in which Chase AMP Bank Limited proposes to engage. Beaumont J. referred to the evidence of witnesses called by the parties as to what the word "Chase" meant to them and other related questions so I need not refer to it other than to observe that most of that evidence was directed to the word "Chase" and not to the conjunction of "Chase" and "AMP" as in "Chase AMP". In my opinion it has not been established that the Chase Corporation Limited should be restrained from using the word "Chase" in its name or in association with its business activities or that any disclaimer is called for to clearly distinguish the name or business of Chase Corporation Limited from that of Chase AMP Bank Limited or the Chase Manahattan group. ace mee tse I would dismiss the appeal with costs. | certify that this and the s\x (©) preced.ng pages are a true copy of the Reasons fer Judgmert herein ef fis Honour Mr. Justice Locknart. doo ( Associate Dated: af NMetenbhaT 99h mye eet oe re ope niene IN_THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISTON ) i) } No. G 30 of 1986 ) } ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN : CHASE MANHATTAN OVERSEAS CORPORATION First Appellant CHASE AMP BANK LIMITED (formerly CHASE AMP LIMITEDY Second Appellant THE CHASE MANHATTAN BANK, N.A. Third Appellant CHASE CORPORATION LIMITED First Respondent ADRIAN KENNETH BURR Second Respondent Lockhart, Neaves and Beaumont Jd. REASONS FOR JUDGMENT CORAM: DATE: 21 November 1986 — NEAVES J. The basic question Chase Corporation Limited in issue in this appeal is whether ("the first respondent"). by the use | i : \ stage sree Seopa = . tom nnn, oF . 2. in the course of its trading activities in Australia of its corporate mame or an abbreviation thereof consisting of the word "Chase" alone, enaages in conduct that is misleading or deceptive or is likely to mislead or deceive and thus engages in conduct that is prohibited by~ sub-s.52(1) of the Trade Practices Act 1974 (Cth) ("the Act"). The learned primary judge, in proceedings instituted by the present appellants. answered that question in the negative and dismissed the appellants' claim. Apart from the cause of action based on s.52 of the Act. the appellants relied upon causes of action arising under ss.53 and 53A thereof and further alleged that the first respondent had wronafullv passed off its business and services as being the business and services of one or more of the appellants. Those causes of action were also dismissed by the primary iudge. On the hearing of the appeal it was conceded that, in the circumstances of this case, if the facts did not support the cause of action based on 5.52 of the Act, the other causes of action could not be made out. The appellants' case under s.52. as pleaded, was that. by the use of the names "Chase" and "Chase Corporation Limited", the first respondent represented - . that its business was the business of fhe appellants: that the services provided by it were the services of the appellants: . that the services provided by it were of the same standard or quality as the services provided by the appellants: y te wear eee en -, - Ve wre Sr es that it was affiliated ~ with the appellants: . that it had the sponsorhip or approval of the appellants. It was alleqed that those representations were false and that, by reason of the matters pleaded, the first respondent engaged in conduct that was misleading or deceptive or was likely to mislead or deceive. The appellants are members of the Chase Manhattan group of companies. The evidence establishes that The Chase Manhattan Bank, N.A., the third appellant. is incorporated in the State of New York and carries on banking business in the United States of America. It also enaages in financial operations throughout the world. including Australia. The evidence also shows that Chase Manhattan Overseas Corporation. the first appellant. being a company incorporated in the United States of America. had for some vears prior to the hearing provided. through offices in Svdney and Melbourne, a wide range of financial services. Those business activities were, however, in the course of being transferred to Chase AMP Bank Limited. the second appellant. which was intended to become the only member of the Chase Manhattan qroup carrying on anv business in Australia or maintaining anv office or emploving any staff here. However. as the primarv judge said, either through Chase AMP Bank Limited or by direct contact many Australians "0 " ' a an ma es ap epee ee renee Lew are mav be expected to continue to do _ business with other _—- members of the Chase Manhattan aroup. - Chase AMP Bank Limited, which is incorporated in New South Wales. carries : on business in each 'State, providing general banking and financial services. There is evidence that it intends, in coniunction with the AMP Society. to expand its business activities to include the receipt of funds for investment in equity and mortaage securities. The first respondent is incorporated in New Zealand and is reqistered in Queensland as a foreign company. The evidence shows that it is engaged in business and propertv investment, management and development. Its investments are distributed about equally between real estate and shares in public and private companies. Its day to day business activities in Australia are not carried on in its own name but through a sub-subsidiary company, Jonrav Holdings Limited. According to the evidence, it is intended that that arrangement will continue but that the name of the sub-subsidiary company will be changed to Century Pacific Limited. The primary judge accepted that. at the time the name "Chase" was oriqinally chosen for the New Zealand enterprise. the name then chosen being Chase Holdings Limited, those concerned knew of no other company witha name which included the word "Chase" and. in particular. that they had then not heard of the Chase Manhattan qroup. This finding was not challenged. aor ene geass ayy The case for the appellants was conducted on the basis that the relevant classes of persons likely to he exposed to the alleged misleading or deceptive conduct were fourfold. namely - . persons contemplating an investment in the first respondent: » persons who actually enter into an ordinary business transaction. with the first respondent; . persons dealing with the first respondent who, although ultimately disabused of error, expend time or monev before ascertaining that they are not dealing with a member of the Chase Manhattan group; and persons having business dealings with one of the appellants who read an unflattering published statement about the first respondent and erroneously associate that company with the Chase Manhattan group to the disadvantade of the latter. The primary judge carefullv examined the evidence Placed before him in respect of each of those classes of persons. As a result of that consideration, he concluded that it had not been demonstrated to his satisfaction that the conduct of the first respondent, in embarking upon and pursuing its business activities in Australia. involved it making any of the representations upon which the appellants relied. soe eee rae With respect. I aqree with his Honour's conclusion. The evidence clearly does not qo so far as to establish that the use by the first respondent of its corporate name or the abbreviation "Chase" has resulted in any person being actually misled or deceived in relation "to any business transaction. Nor, indeed, does the evidence show that anv person has entered into business discussions or negotiations with the first respondent under the erroneous belief that there was a connection or association between that company and the Chase Manhattan aqroup. True it is that a breach of s.52 may occur notwithstanding that the evidence does not establish actual deception. but the absence of such deception is a factor to be weiched in the scales. When the evidence in this case is examined, it, in my opinion. relevantly shows no more than that persons whose business activities are in the field of banking or in the provision of financial services habituallv use the name "Chase" to refer to the Chase Manhattan group of companies and, by reason of that usage, tend to assume that a company which is engaged in banking or in the provision of financial services and which has the word "Chase" as part of its corporate name is a company within, or associated with. that aroup. Thus, such persons can be said to experience feelings of uncertainty or wonder when confronted with a company which has the word "Chase" as part of its name but which has no direct involvement in the banking field or in ee + . Toa or yrs pero - - . " YS € Spree oer we . . reek + 7. the provision of financial services. But those feelings have not been shown to be in any sense due to the conduct of the first respondent. In any event, conduct which merely causes uncertainty or .wonder is not, for that reason alone, conduct proscribed by sub-s.52(1) of the Act. Some criticism was made during the hearing of the appeal of the lack of weight attached by the primary judge to certain affidavit evidence adduced on behalf of the appellants. being affidavit evidence from a number of Members of the public who had been interviewed bv representatives of the appellants. The deponents had all heard of the Chase Manhattan qroup, none had heard of the first respondent. All said thev associated the word "Chase", when used as part of a corporate name, with the Chase Manhattan group or, more particularly. with Chase AMP Bank Limited. The primary judge discounted this evidence referring to it as evidence obtained in the course of a— survey by a market research company. For the appellants it was submitted that his Honour had fallen into error in so treating the evidence: that no market survey had been conducted and that each affidavit should have been evaluated as evidence in its own richt. T do not find it necessary to examine in any detail the appellants' submissions on this aspect of the matter for Iam satisfied that. even if this evidence is evaluated in wares fare ee or oe - aan awry cat we ye the manner for which--the appellants contend. it is by no a means sufficient ~ to tip the scales in the appellants' favour. Fy In determining whether conduct is misleading or deceptive or likely to mislead or deceive within the meaning of sub-s.52(1) of the Act, it cannot be said to be an irrelevant consideration to have regard to the business activities in which the parties are engaged or in which it has been shown "by cogent evidence that they intend to enaade. The first respondent is not presently engaged in Australia in anv field of business activity which is common to that in which the appellants are engaged here. There is evidence that Chase AMP Bank Limited intends to receive funds for investment in equity and mortgage securities and it mav be accepted that there wilt! in the future. be some areas in which the business activities of the parties will overlap to some undefined extent. 'Primarily. however, the appellants are enaaged and will continue to be engaged in the banking and finance industries while there is no sucgaestion that the first respondent's activities will enter that arena. I am unable to regard any activities in which the first respondent, on the evidence. is likely to enaace as being activities in anarea of business which miqht properly be considered as a natural extension of the business being carried on in Australia by the appellants. st -, ory e aoe (oa, nn ca yoer ge + ' rcs ied | Xe] For these reasons, I am of opinion that the appeal _ should be dismissed with casts. <> I certify that this and the precedina 8&8 pages are a true copy of the Reasons for dudament herein of the Honourable Mr Justice Neaves. Associate Dated: 21 November 1996 "~«- somt er ren mmaree ue oo rey es IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No. G 30 of 1986 ) ) GENERAL DIVISION ON APPEAL FROM A SINGLE JUDGE OF THE FEDERAL COURT OF AUSTRALIA BETWEEN : CHASE MANHATTAN OVERSEAS CORPORATION First appellant CHASE AMP BANK LIMITED (formerly CHASE AMP LIMITED) Second appellant THE CHASE MANHATTAN BANK, N.A. Third appellant AND: CHASE CORPORATION LIMITED First respondent ADRIAN KENNETH BURR Second respondent CORAM: Lockhart, Neaves and Beaumont, JJ. DATED: 21 November 1986 REASONS FOR JUDGMENT BEAUMONT J.: The appellants, Chase Manhattan Overseas Corporation, Chase AMP Bank Limited and The Chase Manhattan Bank, . N.A., commenced proceedings in this Court against the first respondent, Chase Corporation Limited, seeking to restrain the use by Chase Corporation Limited of the name "Chase", or any similar name, in connection with the conduct of its business. - ane Te y emai Seat ie diate olla SORT OT ao A rs oT) per nereee + eee gen at TIT wy 2. The appellants, which were members of the Chase Manhattan group of corporations, claimed that, in the minds of the relevant section of the public, the word "Chase" had become associated with that group; and that the use by Chase Corporation Limited of the word "Chase" in its name was conduct likely to mislead or deceive and thus in contravention of the provisions of s.52 of the Trade Practices Act 1974 (the Act). Alternative, but similar, claims were made of contraventions of ss.53 and 53A of the Act. The second respondent, Mr. A.K. Burr, one of the directors of the Chase Corporation Limited, was joined in the proceedings as a person said to be involved in the alleged contraventions. In the Court's accrued jurisdiction, a similar claim of passing off was made by the appellants. Wilcox J. found that no contravention of the Act had occurred and dismissed the passing-off claim (see Chase Manhattan Overseas Corporation v. Chase Corporation (1985) 63 A.L.R. 345). There was no dispute about the background to the claims now made. The first appellant, Chase Manhattan Overseas Corporation, a Delaware corporation, is a sub-subsidiary of The Chase Manhattan Bank, N.A., a New York corporation. The Chase Manhattan Bank, N.A. was formed in 1955 upon the merger of two old and well-known American banks - the Chase National Bank and the Manhattan Company. (The Manhattan Company was incorporated in 1799; the Chase National Bank was formed in 1877, and named after Samuel P. Chase, formerly Secretary of the United States Treasury and later Chief Justice of the United States). The pe ee new ee tae Sie seery a e 3. Chase Manhattan Bank, N.A. is the third largest bank in the United States and the sixteenth largest in the world. The Chase Manhattan corporate group has offices in more than 70 countries and conducts business in these and 60 other countries through a network of more than 6,000 correspondent bank relationships. Chase Manhattan Bank, N.A. does not itself have an office or any staff resident in Australia, but for many years, it has engaged in business relationships from overseas with Australian citizens and corporations, including some governmental bodies. Chase Manhattan Overseas Corporation opened offices in Melbourne and Sydney in 1976 and 1977 respectively. Through those offices, it has provided its clients with a wide range of financial services, including the provision of project and working capital, trading finance, syndicated loans, Euromarket note issuance facilities, securities trading, leasing, electronic cash management, corporate and personal finance advice and the issuing of travellers' cheques. The second appellant, Chase AMP Bank Limited, was incorporated in New South Wales under the name AMP Securities Holdings Limited, as a wholly owned subsidiary of the Australian Mutual Provident Society. In April 1985, Chase Manhattan Holdings (Australia) Limited, a subsidiary of Chase Manhattan Overseas Banking Corporation, acquired one-half of the share capital of the company, which then changed its name to Chase AMP Limited. In September 1985, it was granted an Australian banking licence. It then adopted the name Chase AMP Bank Limited. It OVER TS mY cos aaron pare: pe cen oe 4. carries on banking business at seven locations in Sydney and in one location in each of the other State capitals. It offers "retail" bank services to the public. These services include deposits and current accounts, overdrafts, loans and lease finance, letters of credit and foreign exchange dealings. Facilities offered by it include the issue of Chase AMP credit cards, the provision of automatic teller services and the issue of The Chase Manhattan Bank, N.A. travellers' cheques. It is proposed that Chase AMP Bank Limited will expand the range of its activities by inviting the public to subscribe to trust funds to be invested in equity and mortgage securities. At the time of the trial, the staff of Chase Manhattan Overseas Corporation was being absorbed by Chase AMP Bank Limited. It was then expected that the Australian operations of that Corporation would soon close down. Chase AMP Bank Limited would then remain as the only member of the Chase Manhattan corporate group with a physical presence here. However, it appears that, through Chase AMP Bank Limited or by direct contact, many Australians will continue to do business with other members of the group, and in particular, The Chase Manhattan Bank, N.A., outside Australia. The corporate history of the respondent commenced in September 1970 when a group of local accountants and farm management consultants caused to be incorporated in New Zealand a small company which they named Chase Holdings Limited. The promoters of the company said in their evidence that they were then ignorant of the existence of the Chase Manhattan group and 5. that they selected the corporate name "Chase" for other reasons. Wilcox J. accepted their evidence (see (1985) 63 A.L.R. at pp.348-349). The appellants did not seek to contest this finding. Initially, Chase Holdings Limited traded in real estate in New Zealand. Later, it extended its activities in that country by investing in shares in public and private companies. A number of associated companies, including Chase Group Limited and Concept Projects Limited, were involved in these ventures. In 1981, shareholders of Chase Holdings Limited acquired a controlling interest in Fountain Corporation Limited, a public company listed upon New Zealand stock exchanges. Fountain Corporation Limited manufactured and distributed audio, television and radio equipment. In 1982, Chase Nominees Limited, another company associated with Chase Holdings Limited, acquired a controlling interest in the Amalgamated Theatres group of companies, thus providing Chase Holdings Limited with access to a video and film distribution network throughout New Zealand. It was then decided to use Fountain Corporation Limited to obtain a "back door" listing of the shares. In January 1983, after Fountain Corporation Limited had acquired all the shares in Chase Nominees Limited, Chase Group Limited and Concept Projects Limited, it changed its name to Chase Corporation Limited. At the time of the trial, the property and share portfolios of Chase Corporation Limited were estimated at WN.Z.$90 million and N.Z.$150 million respectively. tere eee gn o. a reat com a— 6. From 1976, directors and executives of Chase Holdings Limited came to Australia from time to time to arrange borrowings. In late 1983, Chase Corporation Limited decided to expand its operations into Australia. In January 1984, Mr. Burr moved to Sydney. He took up temporary accommodation in a room in the offices of Fay Richwhite and Company, a firm of New Zealand merchant bankers. From those premises, Mr. Burr engaged in a "low key" programme of discussions with a view to property development and investment opportunities in Australia. For this purpose, a local investment company, Chas Corp. Pty. Limited, was incorporated in New South Wales. In October 1984, Chas Corp. Pty. Limited acquired one-half of the share capital of Jonray Holdings Limited, a property developer listed on Australian stock exchanges. A nee By a coincidence, the office of Chase Manhattan Overseas Corporation was on the same floor of the building in Sydney in which Fay Richwhite had its offices. There was confusion with the mail. After the Jonray acquisition, Mr. Burr moved into another building. However, in July 1985, Mr. Burr agreed to lease space in the Qantas International Centre, George Street, Sydney, without appreciating that Chase AMP Bank Limited had also moved into the building in May 1985. Chase Corporation Limited occupied its area from August 1985. At the time of the trial, the names of both companies were juxtaposed on the building directory. It is now accepted by the appellants that, again, this was merely a coincidence. coe oe oe me, —s Qtr co ce ee ee ee La F Ps Le if i te 7. Chase Corporation Limited has been registered in Queensland as a foreign company. Its shares are listed on the Sydney and Melbourne stock exchanges. In an advertisement published in the "Australian Financial Review" in October 1985, Chase Corporation Limited described itself as "an entrepreneurial, high growth company, involved in all aspects of business and property investment, management and development". In fact, Chase Corporation Limited conducts no business operations in this country on its own account, although, at the time of the trial, it had moved to acquire the remaining share capital in Jonray with a view to using that company, to be renamed "Century Pacific", as the vehicle for its Australian activities. There was also no dispute about the primary facts. The appellants called a number of witnesses to establish the connection or association, in the minds of some members of the public, between the word "Chase" and the Chase Manhattan group of companies. Ten senior businessmen said that, standing alone, the word "Chase" suggested to them a reference to the Chase Manhattan group. It appeared from their evidence that it is common, at least in banking and financial circles, to refer to the members of the group simply as "Chase". Wilcox J. found (at p. 353,): "It appears to be a common occurrence for people _ wishing to refer to a company in the Chase » Manhattan group, or even to the group as a whole, simply to refer to 'Chase'. According to Mr. Armstrong and to Mr. R.S. Smith, the general manager of the former Chase NBA, the employees 8. of companies within the group often use the word "Chase' to refer to their employer or to the group. The word 'Chase' is highlighted on stationery and business cards used by the applicants. It was used, alone except for the Chase Manhattan logo, in a directional sign at the entrance to the C.M.0.C. office in Bond Street. In publications of the Chase Manhattan gtoup ~- both internal and external - reference is frequently made to 'Chase' or 'The Chase'. The group is often referred to in media articles as 'Chase'; although in the examples tendered in evidence always in the context of a fuller title elsewhere in the article. Ten deponents to affidavits gave evidence that it was their practice, and the practice of those with whom they worked, to use the word 'Chase' to refer to the Chase Bank or the Chase Manhattan group. These deponents were all people concerned with the world of finance, either as providers or users of loan funds. Some of the deponents expressed the view that the word "Chase' was to them the more important part of the title 'Chase Manhattan'; some thought that the use of the word 'Chase' as part of a corporate title enhanced the reputation of the company concerned. Most of those deponents had not heard of Chase Corporation until very recently; some only in the context of this case," Most of those witnesses said that their association of the word "Chase" with the appellants' corporate group would have been made only in the context of the provision of banking or financial services. A few said that they might make the connection in a wider context, so as to extend, for instance, to the field of property development. The scope of the business activities, in Australia, of the Chase Manhattan group was a crucial issue at the trial and on the appeal. The principal defence raised by the respondents was the absence of any common field of activity between the parties. ca " ave \ Fagisc = Ly ne ene ripen ns nT sat, F ay ' ~t y oT me eee me, wets "r * ce L 2s ae ae e, se ceradine tin bans meta % 9. There can be no question but that the principal activity of the appellants' group in this country has been the provision of banking and financial services. The second appellant, it is true, proposes to venture into the fields of property and investment trusts but it was not suggested by the appellants that any of them had, up to the time of the trial, engaged in the field of property development, at least as an active participant. They had, of course, provided financial facilities for such activities. The appellants did, however, seek to make the case that, potentially, there was a field of activity which was common to the parties since, it was said, property development constituted a logical and natural extension of the appellants' previous activities (see, for example, Dunlop Pneumatic Tyre Co. Ltd. v. Dunlop Lubricant Co. (1898) 16 R.P.C. 12 at p.15; Halsbury's Laws of England, 4th ed. Vol. 48 para.161, p.113). In this context, at the trial, the appellants read an affidavit by Mr. J.R. Stingemore, Corporate Finance Manager of AFT Limited, a company responsible for the management of the property trusts of Australian Fixed Trusts. Mr. Stingemore had been employed in finance and property activities since 1961. In para.1o of his affidavit, Mr. Stingemore said: "In my opinion, the real property market is a specialist area requiring particular experience and expertise...It has been my experience that a large number of banks and merchant banks have involved themselves in the real property field in a number of ways including participation (either individually or as part of a joint 10. venture) in the development of real property (such as the Commonwealth Bank, Partnership Pacific, Wardleys and B.T.), owning" real property for its occupation or for leasing to other entities (such as, for example, Delfin BNY) and taking over the management of real property developments from a borrower which has fallen into difficulties..." Mr. Stingemore was cross-examined by senior counsel for the respondents but the cross-examination did not touch upon any part of para.1o. There was also evidence from Mr. Armstrong, the managing director of Chase AMP Bank Limited, that it was "by no means uncommon for a financial institution to become involved as a joint venture partner in developing property, or to take over the development of, for example, an operation which is not progressing satisfactorily and to which the financial institution has extended credit." However, Mr. Armstrong's evidence also made it clear that Chase AMP Bank Limited did not intend to engage in real estate development as an independent activity. The appellants also read affidavit evidence from nine persons from a wide range of occupations who said that they associated the word "Chase" with the Chase Manhattan group. None of these witnesses was cross-examined, although the respondents objected to their evidence on the ground that it lacked relevance. It appears from the form of affidavits sworn by these deponents and from other material, that in late October and early November 1985, the appellants commissioned interviews of a number . weep ee eae SUT TOT vs ' > t te en os oer oe, Ey 11. of members of the public with a view to using some or all of the responses then made as evidence in the proceedings. However, it seems that the appellants chose to call evidence only from those persons who made a connection between the word "Chase" and the Chase Manhattan group. The appellants also relied on evidence from Mr. D.G. Andrews, managing director of Australian Ratings Pty. Ltd., a company which issued credit ratings in respect of Australian financial institutions. In his opinion, a visible name association between a foreign corporation and a local subsidiary was relied upon by investors and depositors as an important indication of commitment on the part of the overseas parent corporation. The appellants adduced evidence of some confusion arising out of the use of the name "Chase". For instance, in May 1985, Ms. M.E. Buchanan, a property consultant, was seeking to lease space for a client in a Sydney building. In the course of the inquiries as to the identity of the owner of the building, she spoke to a solicitor in the city. He advised her "to try Chase". She understood him to be referring to the Chase Manhattan Bank. Ms. Buchanan then spoke to an officer of Chase Manhattan Overseas Corporation and was informed that the Chase Manhattan group had no interest in the building. It is not disputed that, in fact, Jonray and Chase Corporation Limited owned the building. Next, Mr. N.J. Cornell, a senior executive with the 12. Placer group of companies, said that he first became aware of Chase Corporation Limited in about September 1985 when he read a reference to it in the "Australian Financial Review". He thought that it was associated with the Chase Manhattan Bank, possibly as a New Zealand branch of that bank. His mistake was not corrected until 11 October 1985 when a solicitor engaged in the conduct of these proceedings spoke to him. Mr. D.A. Harding was employed as a newsreader by a company offering a press clipping service. He first became aware of Chase Corporation Limited in August 1985 when he read a newspaper article referring to that company. He thought it referred to the Chase Manhattan Bank. He enquired of an officer of Chase AMP Bank Limited whether he should retain press reports relating to Chase Corporation Limited. He was then informed that there was no connection between that company and the Chase Manhattan group. The appellants also sought to rely upon the affidavit evidence of Mr. A.J. Shaw, a resident of Auckland, New Zealand and a foreign exchange advisory officer employed by the Bank of New Zealand. In his affidavit, Mr. Shaw said that he associated the word "Chase" with the Chase Manhattan group and that, until contacted by a solicitor in connection with these proceedings, he believed that Chase Corporation Limited was related in some way to the Chase Manhattan group. It appears that, after the respondents gave notice requiring him to attend for 13. eross-examination, Mr. Shaw declined to come to Australia for that purpose. Notwithstanding this, the learned Judge gave leave to the appellants to read his affidavit, indicating that its weight would be assessed in the light of, inter alia, the respondents' lack of any opportunity to cross-examine him. Mr. Stingemore, whose evidence has already been mentioned, said in his affidavit that he first became aware of Chase Corporation Limited in October 1985 when he read an article which gave him the impression that it was a New Zealand company involved in a takeover of an Australian company. His reaction was that, because of the use of the name "Chase", the company was related to the Chase Manhattan Bank but his error was corrected by a solicitor speaking to him in connection with these proceedings. The appellants sought to tender two issues of a journal, "Asiabanking", published, it would seem, internationally. In the first issue, dated August 1984, a commentator described the political situation in New Zealand at the time and concluded: "In the meantime, the sharemarket reacted violently but predictably to news of the July election. The day after Muldoon's announcement, NZ$165 million (US$105 million) was wiped off prices and buying almost came to a standstill. A few big names - Australia and New Zealand Banking Group, Chase Manhattan Overseas Corporation, Brierley Investments - took a hammering. The New Zealand dollar was hard-pressed too, amid growing fears of devaluation. Experts say the slump will continue." we pete ee toner we eee Ts ers cee See tee ne enen ran te pene yarn vobets ] 14. (It was common ground that Chase Manhattan Overseas Corporation was not listed on any New Zealand stock exchange). The second issue of ""Asiabanking" tendered, dated September 1984, contained the following letter to the journal's editor and his response: "In your August 1984 issue you carried a report on the New Zealand situation that on the day after Sir Robert Muldoon's announcement, the New Zealand share-market, quote, "almost came to a standstill. A few big names - Australia & New Zealand Banking Group, Chase Manhattan Overseas Corporation, Brierley Investments - took a hammering. As a matter of fact, the Chase Manhattan Overseas Corporation (CMOC) is not registered in New Zealand, nor does it do business there. Indeed, there is no Chase Manhattan entity that has a public listing in New Zealand. I shall be grateful if any misunderstanding can be clarified. Albert W.H. Wong Chase Manhattan Bank N.A. The error is regretted. We were in fact referring to Chase Corporation which is publicly listed, but in no way connected with Chase Manhattan Bank." The tender by the appellants of these issues of "Asiabanking"" was objected to by the respondents. Wilcox J. rejected the tender for the reason that the appellants had not established that the prices of shares listed on the New Zealand stock exchanges had, in fact, fallen. It was submitted on behalf of the appellants that this material was permissible, at least as evidence of confusion. On the other hand, the rejection of the cer ep ees eis . dab hia i tT) a a. ee eee 15. tender was sought to be upheld by the respondents on the ground that the publications were merely hearsay. Evidence of a statement made by a person not called as a witness may or may not be hearsay. It is hearsay and inadmissible "when the object of the evidence is to establish the truth of what is contained in the statement. It is not hearsay and is admissible when it is proposed to establish by the evidence, not the truth of the statement, but the fact that it was made." (see Subramaniam v. Public Prosecutor (1956) 1 W.L.R. 965 (P.C.) at p.970; Gray v. New Augarita Porcupine Mines Ltd. (1952) 3 D.L.R. 1 (P.C.) per Lord Radcliffe at p.12; Regina v. Chapman [1969] 2 Q.B. 436 at p.440; Halsbury's Laws of England, 4th ed. vol.17 at p.39; Cross on Evidence, 2nd Aust. ed. (Gobbo, Byrne and Heydon) at pp.446,460; Phipson on Evidence, 13th ed. at pp.334-5). In my opinion, the August 1984 issue of ' "Asiabanking" was admissible as original evidence of the fact that a journalist made a statement published in a financial journal that the shares of Chase Manhattan Overseas Corporation were listed on a New Zealand stock exchange. Given that it was common ground that no shares of any member of the Chase Manhattan group of corporations were listed on any such exchange, but that the shares of Chase Corporation were so listed, the journalist's statement that the shares were those of Chase Manhattan Overseas Corporation could only indicate that he was at least confused on that issue. In my oo 2 ae < ' . eater ae ee ve a rath cn one cra rf I fa ran ace wove, . ae o oy es eer, asteeney mee aE af an me ors me in ry ey 16. view, the journalist's statement does prove the fact of his confusion. It is thus admissible to that extent, even if it is not admissible to prove the truth of the facts reported in the article, including the assertion (immaterial for present purposes) that prices of shares fell (see Phipson, op.cit. at p-335): the fact that there was actual confusion as to the identity of the respective parties was relevant to the claims under the Act and also to the claims in passing-off. In allowing evidence of likely confusion in Harrods Ltd. v. R. Harrod Ltd. (1924) 41 R.P.Cc. 74, Sargant L.J. said (at pp-87): "....it ais essential that there should be tangible probability of injury to the property of the Plaintiffs, but under the word property may well be included the trade reputation of the Plaintiff." : The Court of Appeal was there dealing with a claim in passing-off. If not an essential ingredient in a claim based on s.52 of the Act, the existence of a tangible probability of injury to the trade reputation of the appellants was clearly a relevant consideration in the statutory claim also. At the least it may have affected the exercise of the discretion of the Court to grant an injunction if a contravention of the Act were established. It follows, in my view, that the August issue should have been admitted into evidence. wer mee te cee pen peres a wee owe Le 17. The September 1984 issue of "Asiabanking" is, I think, hearsay and inadmissible insofar as it purports to prove the truth of the facts asserted in it. However, there could be no bona fide dispute as to these matters. In such a case, the Court has a discretion to dispense with the rules of evidence (see Order 33 r.3(a)). In my opinion, this @iscretion should have been exercised by admitting the September issue notwithstanding that it was hearsay. Since the learned Judge did not consider the possible application of Order 33 r.3(a) in this connection, it is open to this Court now to do so (cf. Minister for Aboriginal Affairs v. Peko-Wallsend Limited, (1986) 66 A.L.R. 299, per Gibbs C.J. at p.302; per Mason J. at p.314; per Dawson J. at pp.333~-4). Finally, evidence was given by Ms. L.A. Roberts, a secretary employed by Chase Manhattan Overseas Corporation, of a number of incidents involving confusion on the part of members of the public as to the existence of any connection between Chase Corporation Limited and the Chase Manhattan group: in June and July 1985, Ms. Roberts had received telephone calls at the offices of Chase Manhattan Overseas Corporation from five persons endeavouring to contact Chase Corporation Limited. For their part, the respondents read affidavits sworn by 22 deponents, in the main persons who had conducted commercial dealings with Chase Corporation Limited or who were engaged in the real estate field. These witnesses denied any automatic nes awe yore ony 3 cole mewn es ? 18. association between the word "Chase", standing alone and the Chase Manhattan group. Many of them used the abbreviation "Chase" to refer to Chase Corporation Limited. There was also evidence that this usage was adopted by Chase Corporation Limited in internal documents and external publications. Wilcox J. said (at pp.353-354) - "T think that the evidence, on each side, of the association made by the witnesses upon hearing the word 'Chase', standing alone, is of little value. Words take their significance from their context. If a word ~ including a name - is used in isolation, the experience and associations of the hearer will often supply an immediate, and perhaps erroneous, context. For example, the word "Macquarie" standing alone will probably conjure up quite different immediate associations to an historian, a university vice-chancellor, a geographer and a banker. It is natural that people involved with banking and finance should immediately associate 'Chase' with Chase Manhattan whilst those in the real estate industry should think of 'Chase Corporation. The vast majority of people, who are in neither category, may make no association; they may be merely perplexed. But, in any case, immediate association is one thing; the undertaking of a commercial relationship is another. It is unlikely that people in any of these categories would enter into any financial commitment with a company whose full name was undisclosed." The learned Judge dealt first with the claim under s.52 of the Act. For the reasons ne then gave (see at pp-.354-362), Wilcox J. held that the appellants had not demonstrated that the conduct of Chase Corporation Limited, in embarking upon its activities in Australia, involved any misrepresentation to members of any relevant group in the Australian community as to its identity or connections or that i reece ee crycaremer eS noe rene 7 en Seed ? rns 19. the name is likely to mislead or deceive" (at p.362). The essence of his Honour's reasoning was that there was "very little common field of activity" between the parties; and that in any event, it could reasonably be expected that any initial confusion as to any connection between Chase Corporation Limited and the Chase Manhattan group would be removed before any financial commitment was made by a person dealing with Chase Corporation Limited. For similar reasons, the claims made under ss.53 and 53A of the Act were also dismissed by his Honour. In dealing with the passing~off claim, Wilcox J. found that the appellants had "proved the existence of a commercial reputation within Australia together with sufficient market activity in the jurisdiction to establish a business goodwill entitled to protection" (at p.362). However, the learned Judge dismissed the claim for passing off, saying (at pp.362-363) - "The natural assumption, in the case of a concocted name, is that both businesses emanate from the same source: see Esanda at p.188. There will not usually be such an assumption in the case of a name based upon a description of the nature of the business or the place where, or person by whom, it is conducted; cf. Hornsby Building Centre esp. per Stephen J. at p.230. Where a word is used which is neither concocted nor descriptive, the case will depend upon evidence as to whether, in all of the circumstances, the use of the relevant word is likely to convey to potential customers the misleading impression that the respondent's business or goods is that of the applicant. The relevant question, in such a case, is identical with that which arises under s.52 of the Trade Practices Act. Once it be concluded, as under that section, that the use by the first ; 7 i moe ee, 20. respondent of the name 'Chase' does not involve a representation that the business of the first respondent is that of any of the applicants, the claim in passing off must also fail." I turn first to the claim based on s.52 of the Act. The settled course of authority in this area indicates that the question whether particular conduct of which complaint is made is misleading or deceptive or is likely to mislead or deceive - "is, in the ordinary case, a question of fact to be answered in the context of the evidence as to the alleged conduct and as to relevant surrounding facts and circumstances and that, irrespective of whether conduct produces or is likely to produce confusion or misconception, it cannot, for the purposes of s.52, be categorised as misleading or deceptive unless it contains or conveys in all the circumstances of the case, a misrepresentation." (see Lego Australia Pty. Ltd. v. Paul's (Merchants) Pty. Ltd. (1982) 42 A.L.R. 344 per Deane and Fitzgerald JJ. at p.350; see also Taco Co. of Australia Ine. v. Taco Bell Pty. Ltd. (1982) 42 A.L-R. 177 at p.202). Further, it is not enough that conduct damages a rival trader; it must mislead or deceive or be likely to mislead or deceive "members of the public in their capacity as consumers" (see Parkdale Custom Built Furniture Proprietary Limited v. Puxu_ Proprietary Limited (1982) 149 C.L.R. 191 per Mason J. at p.203). The onus is on the appellants to show that the conduct is likely to mislead or deceive and conduct which "merely causes some uncertainty" in the minds of relevant members of the public does not contravene s.52 (see Puxu, supra, per Mason J. at p.210). On the other hand, the section is not confined to conduct which is intended to mislead or deceive (see BO pn erent ee mo poe pon te ae a4 cept qe ceo . a eg ee ne 21. Puxu, supra, per Gibbs C.J. at p.197). Even though a corporation acts honestly and reasonably, it may none the less engage in conduct that is likely to mislead or deceive (see Yorke v. Lucas (1985) 61 A.L.R. 307 at p.309). Use by a company of its corporate name may, in certain circumstances, contravene s.52. In Hornsby Building Information Centre Proprietary Limited v. Sydney Building Information Centre Limited (1978) 140 C.L.R. 216, Stephen J., observing that there was nothing in the terms of s.52 to suggest that a statement made which is literally true may not at the same time be misleading or deceptive, said (at p.227): "To announce an opera as one in which a named and famous prima donna will appear and then to produce an unknown young lady bearing by chance that name will clearly be to mislead and deceive. The announcement would be literally true but none the less deceptive, and this because it conveyed to others something more than the literal meaning which the words spelled out. Thus, in passing off, a newly incorporated defendant company may not use, in its newly established business, its true corporate name if it be deceptively similar to that of a plaintiff with an established reputation (Fine Cotton Spinners and Doublers Association Ltd. v. Harwood Cash & Co. Ltd. [1907] 2 Ch. 184 at p.190. What has been said of passing off actions applies equally in the present case; as Buckley L.J. remarked in John Brinsmead & Sons Ltd. v. Brinsmead (1913) 30 R.P.C. 493 at p.506, a statement which is literally true and accurate may nevertheless carry with it a false representation. Lord Morris expressed much the same notion in Parker-Knoll Ltd. v, Knoll International Ltd. [i962] R.P.Cc. 265 at p.279. The same will apply in relation to s.52(1)." (Emphasis added) 22. The present case was said by the appellants to be one of indirect or implied, rather than direct or express misrepresentation (see A.G. Spalding and Bros. v. A.W. Gamage Ld. (1915) 32 R.P.C. 273 per Lord Parker at p.284). The appellants contended that the misrepresentation made by Chase Corporation Limited that there was a connection between it and the Chase Manhattan Group was to be inferred from the conduct of Chase Corporation Limited in using in Australia the corporate name "Chase" in the conduct of its business {see Halsbury, op.cit., para.178, p.131). To establish a likelihood of deception under s.52 or in passing-off where there has been no direct misrepresentation generally requires the presence of two factual elements: (1) that the name "Chase" used by the appellants has acquired a reputation among a relevant class of persons; and (2) that members of that class will mistakenly infer from the first respondent's use of the name "Chase" that its business is connected with the appellants' business (see Halsbury op.cit. at p.114). In arriving at the ultimate conclusion of fact whether deception is likely, regard should be had to (a) the nature and extent of the appellants' reputation; (b) the closeness or otherwise of the respective fields of activity in which the appellants and the first respondent are in business; (c) the similarity of the name used by the first respondent to that of gros -aee- 43! y on nee rp ' Lobes 23. the appellants; (ad) the manner in which the first respondent makes use of the name and collateral factors such as the similarity or dissimilarity of secondary indicia, e.g. business addresses or the use of express words of disclaimer sufficient to prevent deception which might otherwise arise; (e) the manner in which the parties carry on their respective business, the class of persons who, it is alleged, is likely to be deceived and all the other surrounding circumstances (see Halsbury, op.cit. at p.114). In the present case, the appellants have established a world-wide reputation, in the field of banking and financial services, in the name "Chase". His Honour found that the appellants had proved the existence of a commercial reputation within Australia together with sufficient market activity in the jurisdiction to establish "a business goodwill entitled to protection". Although the respondents gave notice of their intention to contend that his Honour erred in so finding, we were informed in argument by Mr. Shaw, Q.C., senior counsel for the respondents, that the contention was no longer pressed. In my opinion, Wilcox J. was correct in his finding. It is true that, at the time of the trial, there was, to use the words of Wilcox J., "very little common field of activity" between the parties. The appellants' activities were, by and large, confined to banking and the provision of financial services. The first respondent's business could fairly be ry yor ae _4 z pers =e car hahehenieeimnateietiatedl yoo Hem sat p eee ote . waa ." ee ee ee oe ee 24. described as entrepreneurial, with particular emphasis on property development and equity investment. There was, however, a real prospect that the appellants and the first respondent would expand the scope of their respective activities. The second appellant had already proposed to invite the public to subscribe to trust funds to be invested in equity and mortgage securities. On the other hand, diversification of the business ' of the first respondent was likely. The evidence confirms the accuracy of its advertisement in October 1985 that it was "an entrepreneurial, high growth company, involved in all aspects of business and property investment, management and development". The parties were thus engaged in allied or related, if not the same, fields. "Where the defendant's activities, although not in an area of business in which the plaintiff is engaged, are in an area of business which might be assumed to be a natural extension of the plaintiff's business, likelihood of deception will readily be inferred" (see Halsbury, op-cit. at p.116; see also Dunlop Pneumatic Tyre Co. Ltd. v. Dunlop Lubricant Co, supra; Ames Crosta Ltd. v. Pionex International Ltd. (1977) F.S.R. 46 at p.48; Totalizator Agency Board v. Turf News Pty. Ltd. (1967) V.R. 605 at p.608; Abundant Earth Pty. Ltd. v. R. & C. Products Pty. Ltd. (1985) 59 A.L.R. 211 at p.217; cf. Morison, "Unfair Competition and *'Passing-Off'" (1956) 2 Syd. Law Rev. 50 at p.61; Phillips and Coleman, "Passing off and the "Common Field of Activity'" (1985) lol L.Q.R. 242 at p.256). weer oes er are rove gsr wee pos ee ar oor, ra wet meee. Mag ~~ 25. There is real similarity of the names used by the parties. Each has emphasised the non-descriptive word "Chase". It is an obvious, perhaps inevitable, abbreviation of their corporate names. It was submitted on behalf of the respondents that it was significant that the second appellant also used the word "AMP" as part of its name. Its corporate name, Chase AMP Bank Limited, it is true, does suggest a connection with both the Chase Manhattan group and the Australian Mutual Provident Society. However, the reference in the corporate name to "Chase" is as prominent, if not more prominent, than the reference to "AMP", The manner of use by the first respondent of its corporate name is, I think, an important consideration. Its practice is to refer to itself as "Chase" without the use of words of disclaimer designed to elimimate any prospect of confusion which might arise. Moreover, in the choice of its Sydney business address, the first respondent has made no attempt to distinguish itself from the appellants. It was submitted on behalf of the respondents that any prospect of confusion or deception arising out of the use of the name "Chase" by the first respondent was fanciful only and could be ignored for all practical purposes. Wilcox J. was of the view that it was reasonable to assume that consumers would take care to check the identity of the party they were dealing with before finally committing themselves to their transactions. But where we vite a ee ws she PON wae sa poe ae cree a eer ep ware ae we — 26. the same business name is used in related or allied fields of commerce, confusion or deception is likely to some degree at least, however well educated or sophisticated the consumer may be. The report in the August 1984 issue of "Asiabanking" illustrates how even a financial journalist could be led into error. Nor could it be seriously suggested that s.52 is not contravened unless and until the consumer is legally committed to a particular transaction. It is enough if, as a result of a misrepresentation, the consumer is misled into thinking, contrary to the fact, that there is some connection between the two businesses. To that extent, the consumer has been misled, even if he does not proceed to any further dealing (see Taco Bell, supra, at p.199). In short, it is no answer to a contravention of s.52 that the consumer may subsequently be disabused (see Taco Bell, supra, at p.205). A claim may be made under s.52 and in passing off that, because of a misrepresentation by the defendant, members of the public are induced to believe, contrary to the fact, that the plaintiff's and the defendant's businesses are one. But it is equally open to a plaintiff in proceedings under s.52 and in passing off to make the different case that, because of the misrepresentation of the defendant, members of the public are induced to believe, contrary to the fact, that there is some connection between the two businesses (see Ewing v. Buttercup aae,7 © aromas races eo spr ee se ao . 27. Margarine Company, Limited [1917] 2 Ch. 1 at p.12; Warnink v. Townend & Sons [1979] A.C. 731 per Lord Diplock at 734; Moorgate Tobacco Co. Ltd. v. Phillip Morris Ltd. (1984) 156 C.L.R. 414 per Deane J. at p.445; Kerly's Law of Trade Marks and Trade Names llth ed. at pp.325-6; Morison, op.cit. at p.59; Bannon, Passing Off Trade Deception Trade Marks (1985) at p.9). In the present case, the appellants pleaded both cases (see the application para.(1)(a) and (d); and see the statement of claim para.29(a), (a) and (e)). It is thus no defence to the appellants' claim to suggest, as Mr. Shaw Q.C. contended, that there is little likelihood of confusion between the respective businesses of the parties: consumers can also be misled, in contravention of s.52, if, by a misrepresentation made by the first respondent, they are caused to believe, contrary to the fact, that some connection exists between the first respondent and the Chase Manhattan group. It was further contended for the respondents that the appellants' claims should be rejected as tantamount to an attempt to assert a statutory monopoly in the word "Chase". To illustrate the point, the respondents referred to the name of another company, Chase Minerals N.L., apparently a listed mining company which, it was suggested by the respondents, might be the subject of proceedings brought by the appellants to restrain its use of the word "Chase". The appellants cannot, of course, claim any statutory -- m4 4G wh rt nn eg mt —_——e er 7 Ve 28. i monopoly in the word "Chase". As has been said, in order to obtain relief, the appellants must establish a misrepresentation of the existence of some connection between their business and that of the first respondent. In the case of a mining company, the field of activity is so remote from the appellants' business that the use of the name "Chase" is not, of itself, sufficient to suggest that Chase Minerals N.L. is in some way connected with the appellants. A member of the public would not have any reason to believe that the Chase Manhattan group had diversified into mining (see Lego Australia Pty. Ltd. v. Paul's (Merchants) Pty. Ltd., supra; cf. Lego System A/S v. Lego M. Lemelstrich Ltd. (1983) F.S.R. 155). In my opinion, in the absence of an appropriate disclaimer, the use by the first respondent of the word "Chase" in this country is likely to mislead or deceive some members of the Australian public into believing, contrary to the fact, that there is some connection between the first respondent and the appellants. The first respondent's use of the name "Chase" in a related, if not the same, field of activity is likely, in my view, to cause some persons to think that a connection exists between the first respondent and the appellants. Evidence of actual deception is not, of course, essential for present purposes. The question is one for the Court to decide on the whole of the evidence. But the examples of persons being misled into believing that the first respondent was, in some way, connected with the appellants confirm the impression which I aa oe wee cee 29. would otherwise have formed. This evidence demonstrates that the appellants' claims of the likelihood of deception were by no means fanciful. It follows, in my opinion, that a contravention of s.52 has been made out. The conclusion I have reached does, of course, differ from the view of the case taken by Wilcox J. However, the real controversy turned not on the primary facts, but on the proper inferences to be drawn from those facts. This Court may, if it is proper to do so, form its own view on the question - one of ultimate fact - whether there has been a contravention of s.52 (see Cadbury Schweppes Pty. Ltd. v. Pub Squash Co. Pty. Ltd. (1980) 32 A.L.R. 387 (P.C.) per Lord Scarman at pp.393-4). I turn next to the appropriate form of relief. Notwithstanding the practical difficulties which can sometimes arise in the grant of limited relief in the form of an injunction restraining the use of a particular trade name without clearly distinguishing the business of the defendant from that of the plaintiff,(see Bridge Stockbrokers Ltd. v. Bridges (1984) 4 F.C.R. 460 per Lockhart J. at p.472; Abundant Earth Pty. Ltd. v. R. & C. Products Pty. Ltd., supra, at p.217), the grant of a qualified injunction is, in my view, appropriate here. The injunction I propose would restrain the first respondent from carrying on business in Australia under the name "Chase" or "Chase Corporation Limited" without clearly indicating that it is not associated with the Chase Manhattan group. The injunction 30. would thus not compel the first respondent to change its corporate name. Nor would it inhibit the first respondent in the conduct of its New Zealand operations in any respect. The only impact of the proposed order would be to compel the first respondent, in the small range of activities carried on in this country under its corporate name, to disclaim any connection with the appellants. It is not necessary to consider the other claims under the Act or the claim in passing-off, since the appellants acknowledge that, even if they were to succeed in these other claims, the relief then granted would be the same as in the case of the claim based on s.52. I would make the following orders: l. Appeal allowed. 2. Set aside the orders made by Wilcox J. on 24 December 1985; in lieu thereof, order that the first respondent, by itself, its servants and agents, be restrained in trade or commerce in Australia from carrying on business in Australia under the name "Chase" or "Chase Corporation Limited" without clearly indicating that the first respondent is not associated with the Chase Manhattan group; further order that liberty to apply be reserved to any party; further order that the respondents pay the appellants' costs of the proceedings. 3. Respondents to pay the appellants' costs of the appeal. I certify that this. and the preceding +wénty Aind(Qd) pages are a true copyYof the Reasons ar aa aie, dar aera nena maqg ce Me ore Votre ae arp os a er 31. for Judgment herein of his Honour Mr. Justice Beaypo nt. Dated: Counsel and Solicitors for Applicants: Counsel and Solicitors for Respondents: Dates of hearing: Date Judgment Delivered: hike Hs Associate 21 November 1986 Mr. P. Hely Q.C. with Mr. W.M. Gummow instructed by Freehill Hollingdale & Page. Mr. B.J. Shaw Q.C. with Mr. S.J. Archer and Mr. D.K. Catterns instructed by Allen Allen & Hemsley. 16 and 17 June 1986 21 November 1986 a Demguwenee = ' nye ere